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(Message started by: jib on Apr 30th, 2007, 10:33am)

Title: Ignored 103 rejection
Post by jib on Apr 30th, 2007, 10:33am
I am reviewing the prosecution history of a patent.  The examiner made an obviousness rejection, stating that a couple items would be obvious in the art, in addition to a double patenting rejection.  The Applicant did not address the obviousness rejection at all in response, but the claims issued anyway.

Does the Applicant's silence show acquiescence with the Examiners statement of what was obvious?  Is there any case law that points to this?

I know that silence cannot be used to estop a patent holder from extending the equivalents for an infringement argument.

Thanks.

Title: Re: Ignored 103 rejection
Post by Isaac on Apr 30th, 2007, 1:17pm

on 04/30/07 at 10:33:55, jib wrote:
I am reviewing the prosecution history of a patent. The examiner made an obviousness rejection, stating that a couple items would be obvious in the art, in addition to a double patenting rejection. The Applicant did not address the obviousness rejection at all in response, but the claims issued anyway.

Does the Applicant's silence show acquiescence with the Examiners statement of what was obvious? Is there any case law that points to this?


Not necessarily, but there is a presumption that any narrowing amendment or canceling of claims was for patentability reasons unless the prosecution history suggests otherwise.


Quote:
I know that silence cannot be used to estop a patent holder from extending the equivalents for an infringement argument.


There may be some words in the MPEP to that effect, but, but it ain't so IMO.

Title: Re: Ignored 103 rejection
Post by jib on Apr 30th, 2007, 1:31pm
Thanks.  I appreciate it.

JIB



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